IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

SMART AUDIO TECHNOLOGIES, LLC,
Plaintiff,
v.
APPLE, INC.,
Defendant.
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Civil Action No. 12-134-GMS
Richard Charles Weinblatt, Esquire, and Stamatios Stamoulis, Esquire of Stamoulis & Weinblatt
LLC, Wilmington, Delaware. Attorneys for Plaintiff.
Susan Morrison Coletti, Esquire ofFish & Richardson, P.C., Wilmington, Delaware, and
Benjamin C. Elacqua, Esquire, and Michael R. Rueckheim, Esquire ofFish & Richardson, P.C.,
Houston, Texas, and Ruffin B. Cordell, Esquire ofFish & Richardson, P.C., Washington, DC.
Attorneys for Defendant.
2012
Wilmington, Delaware
OPINION
I. INTRODUCTION
On February 3, 2012, the plaintiff, Smart Audio Technologies, LLC ("Smart Audio"),
initiated this action against the defendant, Apple, Inc. ("Apple"). (D.I. 1.) Smart Audio alleges
that one or more products manufactured and sold by Apple infringe United States Patent No.
6,158,163 (the '"163 Patent"). (ld. a t ~ ~ 6-10.) Presently before the court is Apple's April19,
2012 motion to transfer this action to the Northern District of California pursuant to 28 U.S.C.
1404(a). (D.I. 10.) For the reasons that follow, the court will deny Apple's motion to transfer.
II. BACKGROUND
Smart Audio is a Texas limited liability company with its principal place of business in
Tyler, Texas. (D.I. 1 at ~ 1.) Apple is a California corporation having its principal place of
business in Cupertino, California. (Jd. a t ~ 2.)
Smart Audio is the owner of the '163 Patent, entitled "Vehicle Audio System Having
Random Access Player With Play List Control." (ld. a t ~ 7.) Smart Audio brought this suit
claiming that Apple has infringed and continues to infringe the '163 Patent through its
manufacture and sale of one or more products, including the iPod nano. (Id. a t ~ 8.) On April
19,2012, Apple filed a motion to transfer venue to the Northern District of California. (D.I. 10.)
III. STANDARD OF REVIEW
28 U.S.C. 1404(a) provides: "For the convenience of parties and witnesses, in the
interest of justice, a district court may transfer any civil action to any other district or division
where it might have been brought or to any district or division to which all parties have
2
consented." 28 U.S.C. 1404(a). This provision "was intended to vest district courts with broad
discretion to determine, on an individualized, case-by-case basis, whether convenience and
fairness considerations weigh in favor of transfer." Jumara v. State Farm Ins. Co., 55 F.3d 873,
883 (3d Cir. 1995).
Section 1404(a) sets forth a two-step transfer analysis. The court first asks whether the
action could have been brought in the proposed transferee venue and then determines whether
transfer to a different forum would best serve the interests of justice and convenience. Mitek
Sys., Inc. v. United Servs. Auto Ass 'n, No. 12-462-GMS, 2012 WL 3777423, at *4 (D. Del. Aug.
20, 2012). The burden rests with the defendant to demonstrate that transfer is appropriate at each
step, Jumara, 55 F.3d at 879-80, and, "unless the balance of convenience of the parties is
strongly in favor of defendant, the plaintiffs choice of forum should prevail," Shutte v. Armco
Steel Corp., 431 F .2d 22, 25 (3d Cir. 1970).
IV. DISCUSSION
Both parties recognize that the court looks to "the interests of justice and convenience" in
deciding a motion to transfer, but they disagree sharply regarding several elements of that
inquiry. In particular, they dispute the weight to be;: accorded Smart Audio's forum preference in
light of its decision to file this suit outside its "home turf' of Texas. The court believes that the
parties' confusion may be explained by the fact that, since Jumara was decided, judges within
this district have made subtle adjustments to the language employed in performing the transfer
analysis. While the substance of the inquiry has remained constant, the terminology and even
the basic steps of the analysis have evolved over time. These inconsistencies are neither
surprising nor problematic given the advisement of the Jumara court itself that "there is no
3
definitive formula or list of the factors to consider" in determining whether a motion to transfer
should be granted.
1
55 F.3d at 879. Nevertheless, the court believes that, in the interest of
clarity, some further discussion of the transfer inquiry is warranted here.
The court will first discuss how the language employed in the 1404(a) analysis has
evolved. After determining that no meaningful substantive changes have occurred, the court will
proceed with its consideration of Apple's motion to transfer.
A. Evolution of the Transfer Analysis
While it is undisputed that the Third Circuit's decision in Jumara v. State Farm Ins. Co.,
55 F.3d 873 (3d Cir. 1995), guides the court's transfer analysis, two facially disparate approaches
to that inquiry have emerged in this district. The court first will introduce the Jumara decision
and the two approaches that have developed. After taking note of the common elements that
these methodologies share, the court will turn to a more thorough examination of the differences
between them, concludi:J?.g ultimately that only minor substantive discrepancies exist.
1. The Jumara Standard
In Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995), the Third Circuit provided
guidance as to the application of 28 U.S.C. 1404(a).
2
As noted above, courts confronting a
motion to transfer first ask whether the action could have been brought in the proposed transferee
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Indeed, "[] 1404(a) was intended to vest district courts with broad discretion to determine, on an
individualized, case-by-case basis, whether convenience and fairness considerations weigh in favor of transfer."
Jumara, 55 F.3d at 883. The court shares Judge Stark's belief that, "[g]iven the necessarily individualized, fact-
specific, case-by-case nature of a decision whether to transfer venue, it is inevitable that the multitude of transfer
opinions-including the many issued in this District-will not entirely harmonize with one another." Intellectual
Ventures I, LLC v. Altera Corp., 842 F. Supp. 2d 744,751 (D. Del. 2012).
2
The law of the Third Circuit governs this court's decision on a motion to transfer pursuant to 28 U.S.C.
1404(a). In re Link_A_Media Devices Corp., 662 F.3d 1221, 1222-23 (Fed. Cir. 2011) ("In reviewing a district
court's ruling on a motion to transfer pursuant to 1404(a), we apply the law of the regional circuit .... ").
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venue and then determine whether transfer to a different forum would best serve the interests of
justice and convenience. See Mitek Sys., Inc., 2012 WL 3777423, at *4. With regard to the
second step of this inquiry, Jumara instructed district courts look to the various private and
public interests protected by 1404 rather than to any "definitive formula." 55 F.3d at 879.
These private interests may include:
plaintiffs forum preference as manifested in the original choice; the defendant's
preference; whether the claim arose elsewhere; the convenience of the parties as
indicated by their relative physical and financial condition; the convenience of the
witnesses-but only to the extent that the witnesses may actually be unavailable
for trial in one of the fora; and the location ofbooks and records (similarly limited
to the extent that the files could not be produced in the alternative forum).
Id. The public interests may include:
the enforceability of the judgment; practical considerations that could make the
trial easy, expeditious, or inexpensive; the relative administrative difficulty in the
two fora resulting from court congestion; the local interest in deciding local
controversies at home; the public policies of the fora; and the familiarity of the
trial judge with the applicable state law in diversity cases.
Id. at 879-80.
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Despite the many relevant considerations set forth by the Third Circuit, a transfer
decision remains fundamentally case-specific, and Jumara provides little indication as to how a
district court should weigh each factor. Over time, judges in Delaware have altered their
approach to this analysis, with decisions splitting roughly along two methodological branches.
The court will refer to these branches as the "AffYmetrix approach"
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and the "modem approach."
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The court refers to the enumerated private and public interests collectively as the "Jumara factors."
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The first branch is best illustrated by the court's decision in Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp.
2d 192 (D. Del. 1998).
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Though the court is unable to point to a single, foundational decision introducing this view, there are a
number of recent decisions that serve as examples of the "modem" approach. See, e.g., Mitek Sys., Inc. v. United
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While the two methods are substantively quite similar, the court fears the several formalistic
differences that do exist have complicated the discussion of 1404(a) in this district.
2. Common Elements
In resolving this confusion, it is perhaps useful to begin with an examination of the key
elements that these approaches do share. First, both rest upon the same fundamental inquiry: has
the movant demonstrated that the balance of convenience tips strongly in favor of transfer?
Compare Intellectual Ventures L LLC v. Altera Corp., 842 F. Supp. 2d 744, 750-51 (D. Del.
2012), and Mitek Sys., Inc., 2012 WL 3777423, at *8, with AJ.fj;metrix, Inc. v. Synteni, Inc., 28 F.
Supp. 2d 192, 198 (D. Del. 1998). Additionally, each method looks to the various Jumara
factors--or a subset thereof-in assessing the aforementioned "balance of convenience."
Compare Intellectual Ventures I, 842 F. Supp. 2d at 752-61, and Mitek Sys., Inc., 2012 WL
3777423, at *5-8, withAJ.fj;metrix, 28 F. Supp. 2d at 197-208. Thus, under both approaches, the
court effectively engages in a two-step inquiry. It examines the balance of convenience by
looking to some or all of the Jumara factors (the "balance of convenience analysis") and then
determines if that balance of convenience strongly favors transfer (the '"strongly favors'
standard"). With these similarities in mind, the court now turns to a more thorough description
of the two methods and the facial differences between them.
3. Differences Between the Approaches
The AJ.fj;metrix approach begins from an observation that a plaintiffs choice of forum is
the paramount consideration in determining whether to transfer an action under 1404(a).
AJ.fj;metrix, 28 F. Supp. 2d at 197. This observation, however, is separated from the weighing of
Servs. Auto Ass'n, No. 12-462-GMS, 2012 WL 3777423 (D. Del. Aug. 20, 2012); Intellectual Ventures I, LLC v.
Altera Corp., 842 F. Supp. 2d 744 (D. Del. 2012).
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the various Jumara factors. Rather than considering the mere fact of the plaintiffs forum
preference within the balance of convenience analysis, the court shows deference to the
plaintiffs selection by requiring the defendant to demonstrate that the interests of justice and
convenience weigh strongly in favor of transfer.
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!d. at 199. In other words, while the plaintiffs
forum preference does make transfer less likely, it does so not as an individual Jumara factor but
rather by "establishing the burden that a defendant must overcome in order to prevail on its
motion to transfer."
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Id. The AffYmetrix court emphasized that this burden remains constant
regardless of whether the plaintiff chooses to bring the action on it "home turf' or can offer
"rational and legitimate" reasons for its forum selection.
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See id. at 199-200. The plaintiffs
forum choice is always the paramount consideration, and, as such, the ultimate inqui_ry remains
whether the balance of convenience strongly favors transfer. Id.
On the other hand, courts performing a transfer analysis under the modern approach have
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In Affymetrix, the court made clear that the "strongly favors" standard is derived from the ."paramount
consideration" given to the plaintiffs forum preference. See 28 F. Supp. 2d at 197-98 ("[A] 'plaintiff's choice of a
proper forum is a paramount consideration' ... As a result, on their motions to transfer, [defendants] bear a heavy
burden ... the Court should grant their motions only when the 'balance of convenience ... is strongly in favor of
the defendant."' (emphasis added) (internal citations omitted)). The Affymetrix court also indicated that the
plaintiff's forum preference should not be considered as an independent Jumara factor within the balance of
convenience analysis. !d. at 199. The mere fact of the plaintiff's forum choice counts only toward establishing the
burden that the defendant must ultimately meet, while the substantive reasons underlying its selection .are subsumed
by the remaining Jumara factors. !d. at 200 ("[I]n the ... "balance of convenience" analysis, the Court puts aside
the fact that the plaintiff selected a forum and, instead, explores whether the plaintiff 'offer[s any] substantive
reasons ... indicating that the convenience to it of litigating in [this forum] even approaches the inconvenience
which trial in this forum will impose on the defendants and their witnesses.'" (internal citation omitted)).
Subsequent decisions of the court confirm this position. See, e.g., MP Vista, Inc. v. Motiva Enters. LLC, No. 07-99-
GMS, 2008 WL 5411104, at *2 n.4 (D. Del. Dec. 29, 2008).
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The Affymetrix approach also does not consider the "defendant's [forum] preference" or "whether the
claim arose elsewhere" as independent factors within the balance of convenience analysis-as with the reasons
underlying the plaintiffs forum choice, these considerations collapse into the remaining Jumara factors. See
Affymetrix, 28 F. Supp. 2d at 201 ("[A]long with the plaintiffs choice of forum and the defendant's preference, the
fact that the claim arose elsewhere should carry no weight in the balance of convenience' analysis.").
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The Affymetrix court recognized, however, that these considerations could play a role in the broader
balance of convenience analysis. See 28 F. Supp. 2d at 199-200.
7
treated the plaintiffs forum preference as an independent Jumara factor to be considered within
the balance of convenience analysis. See, e.g., Intellectual Ventures I, 842 F. Supp. 2d at 753-
55. This method, however, also imposes the same heavy burden upon the defendant to
demonstrate that the interests of convenience and justice strongly favor transfer. See id. ("[The
movant's] burden is a heavy one: 'unless the balance of convenience of the parties is strongly in
favor of defendant, the plaintiffs choice of forum should prevail."' (quoting Shutte, 431 F .2d at
25)). Any substantive differences that might exist between the two methodological branches,
exist as a result of that burden.
While the Affymetrix approach considers the mere fact of the plaintiffs forum preference
only in establishing the "strongly favors" standard, the modem approach effectively double-
counts that forum choice-the selection is given effect first in establishing the defendant's
burden, and then again as one of the individual Jumara factors. See, e.g., id. at 750-51, 753-55;
Fuisz Pharma v. Theranos, Inc., No. 11-1061-SLR-CJB,_ 2012 WL 1820642, at *10 (D. Del.
May 18, 20 12) ("[The plaintiffs] choice ... not only represents the first of the Jumara private
interest factors ... it also gives rise to the heightened burden that a defendant faces in showing
that transfer is warranted."), recommendation accepted, 2012 WL 2090622 (D. Del. June 7,
2012). One might reasonably presume that this double-counting under the modem approach
would systematically benefit plaintiffs, creating a substantive divide between the two
methodological branches. For the reasons that follow, however, the court believes that any such
differences are slight and well within the district courts' range of discretion.
First, the court notes that, unlike the Affymetrix approach, the modem method also
includes the defendant's forum preference in its balance of convenience analysis. See, e.g.,
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Intellectual Ventures I, 842 F. Supp. 2d at 755. This provides a partial counterbalance to the
plaintiff's choice of forum, reducing any disparity between the two approaches. It is not the
whole answer, however, as courts applying the modem method generally give greater effect to
the plaintiff's forum selection than to the defendant's. See, e.g., id. ("Under Third Circuit law,
Defendants' preference for an alternative forum is not given the same weight as Plaintiffs
preference.").
Rather, the key recognition is that the modem approach only grants the plaintiff's choice
of forum increased weight within the balance of convenience analysis when certain conditions
exist: the plaintiff must have chosen to litigate on its home turf or at least selected its forum for
other rational and legitimate reasons. See, e.g., id. at 754 (noting that the plaintiff's "legitimate
and rational reasons for suing in Delaware" entitled that choice, at a minimum, to "significant
deference" and that Delaware's status as the plaintiff's home turf entitled its decision to
"substantial, indeed 'paramoru:t,' weight"). In the absence of these conditions, the court accords
the plaintiff's choice of forum no special consideration as an individual Jumara factor and
weighs it no more heavily than the defendant's forum preference. !d. at 753 ("[T]he deference
afforded plaintiffs choice of forum will apply as long as plaintiff has selected the forum for
some legitimate reason." (emphasis added)). Put simply, a plaintiff without good reason to file
suit in Delaware will fare no better under the modem approach than under the Ajjj;metrix
approach, as its mere desire to litigate in this district will be wholly offset by the defendant's
own forum choice.
Of course, use of the modem approach may make a small difference in those cases where
the plaintiff has, in fact, chosen to litigate on its home turf or selected the forum for other rational
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and legitimate reasons. In such cases, the modem method would grant the plaintiffs selection
added weight within the balance of convenience analysis-exceeding the weight given to the
defendant's preference-while the Affymetrix approach would ignore it entirely. Some measure
of"double-counting" will occur, with the plaintiff's forum choice having greater effect under the
modem approach than under Affymetrix.
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The court, however, is untroubled by this divergence
for at least two reasons. First, any systematic difference that may emerge as a result of this
departure would fall well within the court's broad discretion to decide whether transfer is
warranted-this small split amounts to nothing more than the court, at times, choosing to weigh
a single Jumara factor somewhat more heavily. Moreover, the court is not convinced that this
nominal departure would result in any practical difference-weighing the various Jumara
considerations is not merely an exercise in judicial arithmetic, whereby the court assigns
predetermined values to each factor and then adds or subtracts accordingly. Rather, the balance
o:( convenience analysis is a fundamentally case-by-case, fact-specific inquiry. The nominal
differences between the two approaches may matter even less in practice than they do in theory.
For the reasons discussed above, the court believes that the Affymetrix approach and the
modem approach are substantively quite similar. While they employ somewhat different
language, it is difficult to imagine a scenario in which they would arrive at different conclusions,
and any minor substantive discrepancy that may exist is well within the district court's discretion
to decide the inherently case-specific question of transfer under 1404(a). Having thus
determined that the two methodologies are substantively the same, the court will proceed with its
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Indeed, Intellectual Ventures I serves as a ready example of this split. In that decision, the court both
applied the "strongly favors" standard and weighed the plaintiff's choice of forum more heavily than the defendant's
forum preference. See,e.g., 842 F. Supp. 2d at 750-51, 753-55. As such, the plaintiff's forum choice effectively
counted twice in its favor, while the A.ffymetrix method would only have considered that preference once in
establishing the initial burden.
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1404(a) analysis, and, in the interests of clarity, the court notes that it will employ the language
of the modem approach throughout the discussion that follows.
B. Propriety ofthe Transferee Venue
Section 1404(a) permits the court to transfer an action to "any other district or division
where it might have been brought." 28 U.S.C. 1404(a). Accordingly, the court may only order
transfer to the North District of California if venue would have been proper there and if that
district court could have exercised personal and subject matter jurisdiction over this action. 17
James Wm. Moore et al., Moore's Federal Practice 111.12[b] (3d ed. 2012).
Smart Audio makes no argument that it would have been unable to bring this action in the
Northern District of California. Personal jurisdiction would have been proper, as Apple has its
principal place of business in Cupertino, California. See Affymetrix, 28 F. Supp. 2d at 196.
Additionally, a court in the Northern District of California could have exercised subject matter
jurisdiction pursuant to 28 U.S.C. 1331 and 1338(a), and venue would have been appropriate
under 28 U.S.C. 1391(b) and 1400(b). Since Smart Audio could have brought this action in
California, the court turns to the second step of the analysis.
C. Weighing of the Jumara Factors
As discussed above, the next step of the 1404(a) transfer inquiry invites the court to
determine "whether on balance the litigation would more conveniently proceed and the interests
of justice be better served by transfer to a different forum." Mitek Sys., Inc., 2012 WL 3777423,
at *4 (internal quotation omitted). The court will address each of the disputed Jumara factors in
tum.
1. Private interest factors
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1. Plaintiffs forum preference
The first private interest factor is the "plaintiffs forum preference as manifested in the
original choice." Jumara, 55 F.3d at 879. The court generally accords substantial weight to this
forum decision. See, e.g. AlP Acquisition LLC v. iBasis, Inc., 12-616-GMS, 2012 WL 5199118,
at *2 (D. Del. Oct. 19, 2012); Mitek Sys., Inc., 2012 WL 3777423, at *5; Fuisz Pharma, 2012
WL 1820642, at *10. The plaintiffs preference, however, is not "effectively dispositive of the
transfer inquiry," and the court gives this Jumara factor less weight in certain situations. In re
Link_A_Media Devices Corp., 662 F.3d 1221, 1223 (Fed. Cir. 2011); see also Mitek Sys., Inc.,
2012 WL 3777423, at *4. Specifically, the Federal Circuit has indic<:tted that "[w]hen a plaintiff
brings its charges in a venue that is not its home forum ... that choice of forum is entitled to less
deference." In re Link_A_Media, 662 F.3d at 1223.
In this case, Smart Audio clearly has not sought to litigate on its home turf-it is neither
organized under the laws of Delaware nor based in this state. (D.I. 1 at ,-[ 1.) Smart A1:1dio
argues, however, that its forum preference is still entitled to "substantial deference," as there are
"rational, legitimate reasons" for bringing this action in Delaware.
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(D.I. 15 at 10.) While the
court agrees with Smart Audio that the presence of rational and legitimate reasons for choosing
to litigate in Delaware entitles a plaintiffs forum preference to something more than minimal
weight, the court cannot say that such reasons merit "substantial deference" in light of the
Federal Circuit's decision inln re Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011).
10
Smart Audio suggests that it wishes to "litigate outside [Apple's] home turf to avoid any attendant
advantages [Apple] might gain" and to keep this matter in Delaware where it is already litigating several related
cases involving the same patent. (D.I. 15 at 10-11.) Taking these concerns together, the court believes that Smart
Audio's decision to bring suit in a Delaware was a rational, legitimate choice. See Academisch Ziekenhuis Leiden v.
Cardiomems, Inc., No. 10-1127, 2011WL 864911, at *3 (D. Del. Mar. 9, 2011) ("Plaintiff may have made a
strategic decision to litigate outside of Defendant's home turf in an effort to avoid any attendant advantages that
[Defendant] might gain."),
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In the initial decision below, Marvell Int'l Ltd v. Link_A_Media Devices Corp., No. 10-869-
SLR, 2011 WL 2293999 (D. Del. June 8, 2011), the district court implicitly premised the
significant weight it gave the plaintiff's forum preference on its finding that the "plaintiff . . .
selected the forum for some legitimate reason." Marvell Int 'l Ltd v. Link-A-Media Devices
Corp., 2011 WL 2293999, at *1 (D. Del. June 8, 2011). The Federal Circuit, however, granted
the defendant's petition for a writ of mandamus and directed the district court to transfer the
action, finding that too much weight had been placed on the plaintiff's choice of forum. In re
Link_A_Media Devices Corp., 662 F.3d at 1223. It therefore appears that, while the legitimate
reasons underlying Smart Audio's forum selection do require that some additional deference be
given to its choice, those reasons do not carry the same weight as would a decision by Smart
Audio to sue on its home turf.
This factor clearly weighs against transfer, but, for the reasons discussed above, the court
will accord it less than the "substantial" or "paramount" weight_ than it would merit had Smart
Audio filed suit in its home forum.
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n. Defendant's forum preference
The next private interest factor is the defendant's forum. preference. 55 F.3d at 879. By
filing its motion to transfer, Apple has indicated that it would rather litigate in California, its state
of incorporation and the site of its principal place of business. This factor weighs in favor of
transfer.
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Smart Audio also argues that its forum preference is entitled to maximum weight because it forms the
paramount consideration in any transfer analysis regardless of "home turf' considerations. (D.l. 15 at 9-10.) The
court agrees that the plaintiffs forum choice represents the paramount consideration, but, as explained more
thoroughly in Section IV.A, this fact is already reflected in Apple's burden of demonstrating that the convenience
analysis strongly favors transfer. At this stage, the court considers only what weight the plaintiffs choice of forum
should be given as a Jumara factor.
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111. Where the claim arose
The court next considers where Smart Audio's claim arose. Jumara, 55 F.3d at 879.
"[A]s a matter of law, a claim for patent infringement arises wherever someone has committed
acts of infringement, to wit, 'makes, uses, offers to sell, or sells any patented invention' without
authority." Cellectis S.A. v. Precision Biosciences, Inc., 858 F. Supp. 2d 376, 381 (D. Del. 2012)
(quoting 35 U.S.C. 271(a)); see also Robocast, Inc. v. Apple, Inc., No. 11-235-RGA, 2012 WL
628010, at *2 (D. Del. Feb. 24, 2012). Thus, when the defendant in a patent infringement action
operates on a national or global level, this factor is typically neutral.
Apple argues, however, that the court must also consider where the development of the
accused products occurred and notes that the "research, design, development, and testing of the
iPod nano and related products" took place at its California headquarters. (D.I. 11 at 13-14.)
Indeed, the court has recognized that "[t]o some extent, [infringement] claims ar[i]se where the
allegedly infringing products [a]re d ~ s i g n e d and manufactured," Wacoh Co. v. Kionix, Inc., 845
F. Supp. 2d 597, 602 (D. Del. 2012), and agrees with Judge Stark's analysis of this factor in
Intellectual Ventures I, 842 F. Supp. 2d at 751. In that case, while the allegedly infringing
products were sold nationwide, at least some of the research and development activities relating
to those products occurred in the proposed transferee district. Judges Stark ultimately found that
the "location of operative events" factor weighed in favor of transfer, reasoning that, "[i]f there
are significant connections between a particular venue and the events that gave rise to a suit, this
factor should be weighed in that venue's favor." Intellectual Ventures I, 842 F. Supp. 2d at 755
(quoting In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009)).
In this case, while Apple has allegedly committed acts of infringement in both the
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District of Delaware and the Northern District of California, the development of the accused
product took place only in the latter. As such, the court finds that this factor weighs slightly in
favor of transfer.
1v. Convenience of the parties
Jumara next instructs the court to assess the "convenience of the parties as indicated by
their relative physical and financial condition." 55 F.3d at 879. The court looks to several
elements in weighing this factor, including: "(1) the parties' physical location; (2) the associated
logistical and operational costs to the parties' employees in traveling to Delaware (as opposed to
the proposed transferee district) for litigation purposes; and (3) the relative ability of each party
to bear these costs in light of its size and financial wherewithal." Mitek Sys., Inc., 2012 WL
3777423, at *6 (quoting Fuisz Pharma, 2012 WL 1820642, at *12).
Apple argues that it would find litigating in the Northern District of California far more
as that is the district in which it is incorporated and maintains its principal place of
business, (D.I. 11 at 16.) Moreover, Apple contends that it would be no more burdensome for
Texas-based Smart Audio to litigate in California. Smart Audio, on the other hand, argues that it
clearly_ does find Delaware to be the more convenient forum, pointing to its very decision to
bring the action in this forum. Smart Audio also notes that the court's assessment of this factor
must account for the disparity in financial resources between the parties.
Both parties make convincing arguments with regard to this factor. The court agrees with
Smart Audio that any inconvenience imposed upon Apple must be examined in light of Apple's
15
vast financial resources,
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but Delaware does not appear to be a particularly convenient forum for
Smart Audio itself. While the court does not presume that California presents a more convenient
forum than Delaware for Smart Audio, see Tessera, Inc. v. Sony Elecs., Inc., 10-838-RMB, 2012
WL 1107706, at *4 (D. Del. Mar. 30, 2012) ("[T]he best indicator of a plaintiffs own
convenience is the plaintiffs own choice of forum."), the sheer distance between this state and
Smart Audio's Texas headquarters does suggest that Delaware cannot be much more convenient.
This Jumara factor ultimately requires the court to determine how much inconvenience
each party will suffer should it be forced to litigate in the other party's desired forum as opposed
to its own. Given Apple's size, the court does not believe that keeping this case in Delaware
would cause it much inconvenience. Likewise, given Smart Audio's location and lack of
connections to Delaware, the court believes that it would suffer little added inconvenience were
this case transferred away from its preferred forum. Since both fora are near equally convenient
to the parties, the court finds that this factor is neutral.
v. Convenience of the witnesses
The fifth private interest factor is "the convenience of the witnesses-but only to the
extent that the witnesses may actually be unavailable for trial in one of the fora." Jumara, 55
F.3d at 879. Apple argues that "[t]here are former Apple employees with knowledge of the
design and development of the iPod nano that are located in California." (D .I. 11 at 17.) These
potential non-party witnesses are beyond the subpoena power of this court but not that of the
Northern District of California. (I d.) Smart Audio responds that Apple must demonstrate that
12
While Smart Audio has no employees and had no revenue in 2011, Apple had net income of $25.922
billion for the year ended September 24, 2011. (D.I. 15 at 13.) Apple is a powerful corporation that is, as a recent
decision from this district observed, "omnipresent in everyday life." Robocast, Inc., 2012 WL 628010, at *2.
16
these former employees would actually be unavailable for trial in Delaware. (D.I. 15 at 15.)
The court agrees with Smart Audio and has recognized that this factor is only given
weight when there is some reason to believe that a witness actually will refuse to testify absent a
subpoena. See AlP Acquisition LLC v. iBasis, Inc., 2012 WL 5199118, at *5 n.6; Acuity Brands,
Inc. v. Cooper Indus., Inc., No. 07-444-GMS, 2008 WL 2977464, at *2 (D. Del. July 31, 2008).
While significant distance between an identified witness and the forum may suggest, in some
instances, that the witness will be unwilling to appear freely, the court will make no such
presumption here. "It is the defendant's burden to show both the unavailability of a particular
witness and that witness' importance to the defendant's case," Tessera, Inc., 2012 WL 1107706,
at *6, and Apple has failed to demonstrate that its former employees will refuse to testify in
Delaware or explain why their testimony will be necessary. Since the mere distance between
California and Delaware is not enough to tip this factor in Apple's favor, the court finds that it
weighs neither for nor against transfer.
13
v1. Location ofbooks and records
Finally, the court considers "the location of books and records (similarly limited to the
extent that the files could not be produced in the alternative forum)." Jumara, 55 F.3d at 879.
"In patent infringement cases, the bulk of the relevant evidence usually comes from the accused
infringer. Consequently, the place where the defendant's documents are kept weighs in favor of
transfer to that location." In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009); see also
Mitek Sys., Inc., 2012 WL 3777423, at *6.
13
The parties also dispute what effect should be given to the location of the following potential witnesses:
the inventors of the '163 Patent, the former assignees of the '163 Patent, and the attorney who prosecuted the '163
Patent. (D.I. 15 at 15-16; D.l. 18 at 12). Since these individuals reside in neither Delaware nor California and
because neither party has provided reason to believe that these individuals would be unwilling to testify in either
forum, their location has no bearing on the court's assessment of this factor.
17
In this case, the defendant, Apple, maintains its documents relating to the design and
development of the iPod nano at its headquarters in Cupertino, California. (D.I. 11 at 15.)
Though the court appreciates Smart Audio's argument that technological advances in the
electronic storage and transfer of documents have made this factor somewhat antiquated, see
Tessera, Inc., 2012 WL 1107706, at *6; Mitek Sys., Inc., 2012 WL 3777423, at *6, it cannot
simply ignore the location of the relevant books and records, see In re Link_ A_ Media Devices
Corp., 662 F.3d at 1224. As such, the court finds that this factor weighs ever so slightly in favor
of transfer.
2. Public interest factors
The parties agree that most of the public interest Jumara factors are either neutral or
inapplicable in this case. The court will discuss the remaining two factors below.
1. Practical considerations
Jumara instructs the court to assess "practical considerations ~ h a t could make the trial
easy, expeditious, or inexpensive." Jumara, 55 F.3d at 879. One such consideration is the
existence of related lawsuits in the district court. See, e.g., Mitek Sys., Inc., 2012 WL 3777423,
at *7; Intellectual Ventures I, 842 F. Supp. 2d at 759; see also Cont.'l Grain Co. v. The Barge
FBL-585, 364 U.S. 19, 26 (1960) ("To permit a situation in which two cases involving precisely
the same issues are simultaneously pending in different District Courts leads to the wastefulness
of time, energy and money that s 1404(a) was designed to prevent."). Here, Smart Audio argues
that this factor weighs strongly against transfer, due to the three related lawsuits pending in this
district involving the' 163 Patent and devices alleged to infringe that patent in a manner similar to
18
the iPod nano. (D.I. 15 at 17-18.)
14
Apple, however, contends that the existence of these related lawsuits is irrelevant and that
privileging them would run contrary to policy evidenced in recent judicial precedent and
legislation. (D.I. 18 at 12-13.) Specifically, Apple points to In re EMC Corp., 677 F.3d 1351
(Fed. Cir. 2012), in which the Federal Circuit explained that a plaintiff could not maintain a
single action against multiple defendants for their separately developed accused products merely
because their products allegedly infringed the same patent and were "not dramatically different."
677 F.3d at 1358-61. Apple also references 35 U.S.C. 299(b), which provides that "accused
infringers may not be joined in one action as defendants ... or have their actions consolidated
for trial, based solely on allegations that they each have infringed the patent or patents in suit."
!d.
The court is not persuaded by Apple's policy argument. Smart Audio is not attempting to
join in a single action each of the d e f e n d a n ~ s alleged to have separately infringed the '163 Patent.
Rather, it merely suggests that the commonalities that do exist between the four lawsuits may
allow the court to develop some familiarity with the patents and technology involved, thereby
conserving judicial time and resources.
15
This is an important practical consideration, and the
court therefore finds that this factor weighs against transfer.
n. Local interests
Finally, the court considers "the local interest in deciding local controversies at home."
14
In its Answering Brief, Smart Audio actually argued that four additional lawsuits were pending, but one
suit, Smart Audio Techs LLC v. LE Electronics Inc., No. 12-222-GMS, has since been voluntarily dismissed.
15
Apple's additional contention that this is a simple case does not change the court's analysis-allowing all
four cases to proceed before one court will lessen the costs to the judicial system as a whole, even if those costs are
slight to begin with.
19
Jumara, 55 F.3d at 879. This factor is typically neutral in the context of patent litigation, as
"patent issues do not give rise to a local controversy or implicate local interests." TriStrata Tech.,
Inc. v. Emulgen Labs., Inc., 537 F. Supp. 2d 635, 643 (D. Del. 2008). Apple contends that an
exception to this general rule exists where, as in this case, neither party is located in the
transferor forum but there exists some connection to the proposed transferee forum. (D.I. 11 at
13.)
The court is not convinced. While Apple is indisputably tied to California and this case
may well present a matter of local interest in that state, the court cannot say that it represents a
"local controversy" in any traditional sense. Judge Robinson's recent discussion of this factor is
instructive:
[P]atent litigation does not constitute a local controversy in most cases. Patent
cases implicate constitutionally protected property rights. The resolution of
patent cases is governed by federal law reviewed by a court of appeals of national
(as opposed to regional) stature. Moreover, to characterize patent litigation as
"local" undermines the appearance of neutrality that federal courts were
established to provide and flies in the face of the national (if not global) markets
that are affected by the outcome of these cases.
Helicos Biosciences Corp. v. !/lumina, Inc., 858 F. Supp. 2d 367, 375 (D. Del. 2012). This is a
lawsuit governed by federal law, brought against a multinational corporation, and concerning a
product that is sold and used nationwide. It is truly a national controversy and, as such, the court
finds that this factor is neutral.
D. Transfer Analysis Summary
The court finds that Apple has failed to demonstrate that the balance of convenience
strongly favors transfer. Taken together, the parties' respective forum preferences lean slightly
against transfer. Though the court does not grant Smart Audio's forum choice paramount weight
20
as an individual Jumara factor, it is entitled to some degree of heightened deference and thus
eclipses Apple's own competing preference. While two additional considerations-the location
of relevant books and records and the location of operative events-do pull gently in favor of
transfer, the remaining private interest factors are all neutral. Likewise, most of the public
interest Jumara factors are neutral or inapplicable in this case. The "practical considerations"
factor, however, weighs against transfer, given the three related cases also pending in this court.
Thus, the court is confronted with two private interest considerations leaning slightly in
favor of transfer, one public interest factor recommending that the case remain in this district,
and Smart Audio's Delaware forum choice weighing a little more heavily than Apple's own
preference for_ California. Even if the court could say that the balance of convenience tilts
somewhat toward transfer, Apple certainly has not shown that the interests of convenience and
justice strongly favor its position.
V. CONCLUSION
For the foregoing reasons, the court will deny Apple's motion to transfer to the Northern
District of California pursuant to 28 U.S.C. 1404(a).
21
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
SMART AUDIO TECHNOLOGIES, LLC,
Plaintiff,
v.
APPLE, INC.,
Defendant.
)
)
)
)
)
)
)
)
)
)
______________________________ )
Civil Action No. 12-134-GMS
ORDER
At Wilmington this lf!1ay of November 2012, consistent with the court's Opinion of
this same date, IT IS HEREBY ORDERED that:
The defendant's Motion to Transfer (D.I. 10) be DENIED.